Just thought I'd de-lurk and chime in here with a reply from an actual (US) attorney. I'm a much better lawyer than I am a bass player so this is the first thread I've felt qualified to respond in.
A couple of points:
1. Don't just laugh this off and ignore it. The other band may be playing weddings and garage parties now but if they get signed some day their new label will make your life a living hell. I have a friend who's an intellectual property attorney with Sony. She spends her days crushing the life out of small acts who dare to borrow a riff or loop from one of their artists. Because she's a salaried staff attorney her work costs the label about 10% of what you'll pay defending a lawsuit from them. They know this and employ a strategy that will make it far more expensive for you to win than to just pay them off. Once they get their claws into you, though, they will not stop until they get as much out of you as they think you have. You will realize far less expense and heartache if you cure this now before any serious lawyering starts.
2. This can involve both trademark and copyright law. It's a complex area where cases turn on obscure facts and admissions. If you send them a reply saying that you've been using the name since whenever and have played gigs all over wherever you may actually be giving them ammo to use against you. As much as I hate to say it, the road to the poor house is paved with people who did their own legal work. Assuming that you really want to keep the name this is one time where it's worth the £50 to consult with a solicitor who specializes in intellectual property law.
3. Note that in most jurisdictions trademarks DO NOT need to be registered. Registering the mark gives you better options about enforcing it but you don't actually need to register in order to prevent somebody from using your mark. Just because you can't find the mark in a registry doesn't mean it's free game. In the US we have both registered trademarks governed by federal law and unregistered common law trademarks covered by state law. This leads to some goofy results where one band can own the name in Georgia and Florida, another can own it in California, and a third could own it in the other 47 states. Like I said, the law in this area is a complicated mess. You generally need a solicitor to figure out who owns stuff like this.
4. There's really no such thing as an "international trademark". Trademarks are generally creatures of national law and the rules vary dramatically from country to country. There are a couple of multinational treaties that address cross-border trademark rights but you really don't need to worry much about anything but UK law unless one of the two bands is routinely playing outside the country.
5. Finally, note that who started using the name first is not always the deciding factor. There are many other things that can come into play. It can even turn out that both bands have the right to use the name or that neither has a right to it. Weird things like what font you used on your advertisements can play a big role here. Don't think you've got a slam dunk case just because you're the older band.
So I hope that's helpful. My general advice is to just call up whoever sent you the letter and start a dialogue with them. Don't make any claims about who had the name first, etc, etc. Just give them a friendly ring to see what they're really up to and why they want to start an argument with you over this. It may just be some 17yo who thinks he's come up with the greatest band name ever. It might also be a staff attorney at a label who's willing to torture small children to further the label's interests. A quick phone call will tell you what you're dealing with and how you might want to proceed.
Good luck with it. Let us know how it turns out.
Cheers,
Dan.
A couple of points:
1. Don't just laugh this off and ignore it. The other band may be playing weddings and garage parties now but if they get signed some day their new label will make your life a living hell. I have a friend who's an intellectual property attorney with Sony. She spends her days crushing the life out of small acts who dare to borrow a riff or loop from one of their artists. Because she's a salaried staff attorney her work costs the label about 10% of what you'll pay defending a lawsuit from them. They know this and employ a strategy that will make it far more expensive for you to win than to just pay them off. Once they get their claws into you, though, they will not stop until they get as much out of you as they think you have. You will realize far less expense and heartache if you cure this now before any serious lawyering starts.
2. This can involve both trademark and copyright law. It's a complex area where cases turn on obscure facts and admissions. If you send them a reply saying that you've been using the name since whenever and have played gigs all over wherever you may actually be giving them ammo to use against you. As much as I hate to say it, the road to the poor house is paved with people who did their own legal work. Assuming that you really want to keep the name this is one time where it's worth the £50 to consult with a solicitor who specializes in intellectual property law.
3. Note that in most jurisdictions trademarks DO NOT need to be registered. Registering the mark gives you better options about enforcing it but you don't actually need to register in order to prevent somebody from using your mark. Just because you can't find the mark in a registry doesn't mean it's free game. In the US we have both registered trademarks governed by federal law and unregistered common law trademarks covered by state law. This leads to some goofy results where one band can own the name in Georgia and Florida, another can own it in California, and a third could own it in the other 47 states. Like I said, the law in this area is a complicated mess. You generally need a solicitor to figure out who owns stuff like this.
4. There's really no such thing as an "international trademark". Trademarks are generally creatures of national law and the rules vary dramatically from country to country. There are a couple of multinational treaties that address cross-border trademark rights but you really don't need to worry much about anything but UK law unless one of the two bands is routinely playing outside the country.
5. Finally, note that who started using the name first is not always the deciding factor. There are many other things that can come into play. It can even turn out that both bands have the right to use the name or that neither has a right to it. Weird things like what font you used on your advertisements can play a big role here. Don't think you've got a slam dunk case just because you're the older band.
So I hope that's helpful. My general advice is to just call up whoever sent you the letter and start a dialogue with them. Don't make any claims about who had the name first, etc, etc. Just give them a friendly ring to see what they're really up to and why they want to start an argument with you over this. It may just be some 17yo who thinks he's come up with the greatest band name ever. It might also be a staff attorney at a label who's willing to torture small children to further the label's interests. A quick phone call will tell you what you're dealing with and how you might want to proceed.
Good luck with it. Let us know how it turns out.
Cheers,
Dan.
